IP Law Newsletter Volume X, Issue 08

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India: Monsanto appeal to enforce BT cotton seeds declined by Delhi High Court

Source: www.delhihighcourt.nic.in

Justices S Ravindra Bhat and Yogesh Khanna of the Hon’ble Delhi High Court (DHC) recently passed an order dismissing Monsanto’s plea by stating that its patent for Bt cotton seeds was not valid under Section 3(j) of the Indian Patents Act which recites that plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals are not patentable.

The Hon’ble court further clarified that Monsanto Technologies’ patents on Bt cotton seed varieties Bollgard and Bollgard II were not valid and rejected its claims against Nuziveedu Seeds on this count.

Prior to the above decision, Monsanto was given three months to appeal to the Protection of Plant Varieties and Farmers’ Rights Authority for relief under the Protection of Plant Variety and Farmers Right Act. Regarding the same, the court heard a set of appeals filed by Monsanto and Nuziveedu along with the latter’s group companies including Prabhati Agri Biotech and Pravardhan Seeds.

According to the recently published news with Economic Times, a few government organizations after hearing the order said that they would write to the Department of Agriculture to immediately scrap trait fee on Bollgard II cotton seeds.^[1] One of the spokesperson from these organizations also declared that plant varieties and seeds can’t be patented will protect the rights of farmers and ensure the country’s food security.

A Colossal Setback for Monsanto

Running for an answer on the order passed, Monsanto’s lawyer disappointed with the order revealed that the company will approach Supreme Court in the next 30 days with a certificate of appeal granted by the court. Before making the above statement, the Monsanto lawyer had asked the court to hold the order in abeyance for three months during which it could seek remedies, however the court did not accede to this.

Further, with respect to the suit for infringement between Monsanto and Nuziveedu Seeds related to trait fees, the court affirmed that Monsanto’s claim was not maintainable as the patents were invalid. However, the suit can proceed for claim of damages since there was a sub-license agreement for a period of 10 years between the parties. Earlier, the single judge had said the Indian companies would have to pay trait fees to Monsanto, in line with government-set rates.

Outcomes

The order passed by DHC is in favor of the Indian cotton farmers as there will no IPR protection, particularly patents for plant varieties and seeds, however the decision shall bypass to bring best technologies by global companies in India where agricultural innovation are still in the pipeline, if there is no protection to plant variety and seeds.

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[1]https://economictimes.indiatimes.com/news/economy/agriculture/delhi-high-court-dismisses-
monsanto-plea-to-enforce-bt-cotton-seed-patent/articleshow/63713854.cms

 

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India: Madhya Pradesh Wins GI Tag for Kadaknath Chicken

Kadaknath Chicken is one of the rarest poultry breeds of India. It is famous for its black meat, low cholesterol, high protein, quality, texture and taste. It is sold at around INR 500 per kg.

On March 28, 2018, Madhya Pradesh got the Geographical Indication Tag from the GI Registry in Chennai for Kadaknath Chicken, an indigenous black-feathered chicken breed found in tribal-dominated Jhabua district in the state. MP animal husbandry minister Antar Singh Arya said, ‘Thanks to the persistent efforts of the department officials, we have managed to win the GI tag’. ^[1] The application was filed by the Madhya Pradesh Government in 2012. The government-run hatcheries in Madhya Pradesh produce about 2.5 lakh chickens of the Kadaknath variety annually.

Chhattisgarh Government also filed GI application in 2017 claiming its rights over Kadaknath Chicken. The basis of their application was the success of the breeding project in Dantewada. Saurabh Kumar, Dantewada collector, told Hindustan Times that about 120 self-help groups (SHGs) are rearing a black chicken variety in Dantewada and 1,600 women are earning a livelihood from selling these birds.^[2] However, the claim was rejected by GI Registry in Chennai.

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[1]https://www.hindustantimes.com/india-news/mp-s-black-tribal-chicken-kadaknath-wins-gi-tag-beats-

chhattisgarh-s-claim/story-kSJrEoLx0GFT9z2NpvzQ8I.html

[2]https://www.hindustantimes.com/india-news/mp-s-black-tribal-chicken-kadaknath-wins-gi-tag-beats-
chhattisgarh-s-claim/story-kSJrEoLx0GFT9z2NpvzQ8I.html

 

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India: Comparison of Trademarks in question must be done in totality and not in parts

Source:www.delhihighcourt.nic.in

Introduction Trademark registration guarantees the proprietor certain set of exclusive rights. These exclusive rights not only provide a unique trade identity to the proprietor, but also ensures that nobody else violates these rights, misuses, or copies the trade name or trademark in any manner. In legal terms, violation of the exclusive rights attached to a registered trademark without the authorization or licensees from the proprietor is termed as trademark infringement. To prove trademark infringement in India, the Court considers several factors. Some of these factors are^[1].

• The degree of similarity between the two marks: In this factor usually, the Indian Courts compare the marks in question and take note of the resemblance between the marks in question, phonetic, or visual or similarity in idea. The deciding element of similarity is the mind of consumer having average intelligence.
• Presumption of Confusion: Once a brand enters in the market and establishes itself, it leaves an impression in the minds of the people. The consumers start associating the registered mark to the brand for which it is used. In such a case, when any other entity or individual uses a similar or identical mark in order to confuse the consumer regarding the origin of the good, is when this factor is proved. A deceptive mark can be said to be such a mark, which is likely to cause confusion in the minds of the buyer.
• Reputation of the Registered mark: This factor looks at the level of popularity that the registered mark has achieved within the territory of India.
  • Usage with or without authorization: The Court would take note of the fact that the application of the mark was without proper authorization or license from the registered proprietor and the alleged infringer had full knowledge of this fact.
• Comparison of the two marks in totality: The Courts have repeatedly reiterated that, in case of trademark infringement the marks in question would be considered in totality and not in parts.
• Prior use: Another important and deciding factor would be ‘prior use’ of a trademark. This is a defence in infringement cases. The rights of a prior user of the mark are kept on a higher pedestal than even that of the proprietor of a registered trademark. The Court would consider which party had been using the mark earlier than the other.

The Delhi High Court on February 19, 2018 in the case of Sun Pharma Laboratories Ltd v. Lupin Ltd & Anr, held that, ‘it is a settled legal position that while comparing
the trademarks, the marks have to be taken as a whole. Merely because the Defendant was using a part of the mark earlier cannot be a ground to plead trademark infringement’. The Court further clarified that the mark cannot be split and then compared, as is sought to be done in this case.

Facts of the Case

• Sun Pharma Laboratories (hereinafter referred to as ‘the Plaintiff’) is a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd. and in order to strengthen its organizational structure of Domestic Formulation Undertaking, Sun Pharmaceutical Industries Ltd. vide Scheme of Arrangement, spun off its domestic formulation division undertaking including intellectual property thereof to the Plaintiff.
• On May 5, 2013, the Bombay High Court approved the above Scheme of Arrangement, because of which the Plaintiff became the proprietor and owner of all the IP rights of Sun Pharmaceutical Industries Ltd. for the domestic formulation undertaking activities.
• The Plaintiff thus recorded itself as the subsequent proprietor of the trademarks with the Trade Marks Registry.
• One of the medicine, used for treatment of non-insulin diabetic patients, of the Plaintiff is marketed under the trademark TRIVOLIB, which according to Plaintiff, is a coined mark.
• Lupin Ltd. (hereinafter referred to as ‘Defendant No.1’) markets the medicines manufactured by Defendant No.2.
• In the third week of September 2014, it was found by the Plaintiff that the Defendants are marketing its medicine under the mark TRI-VOBIT 1 and TRI-VOBIT 2 (hereinafter referred to as ‘impugned marks’) in Delhi. The composition of the medicine was also alleged to be similar.
• According to the Plaintiff, the impugned marks are phonetically and deceptively similar to the Plaintiff’s registered mark TRIVOLIB. The Plaintiff filed the present suit as the actions of the Defendants constituted infringement, passing off and unfair competition.

Plaintiff’s Contentions

• The Plaintiff contends that the mark TRIVOLIB was coined by it in August 2011 and is used extensively since then. The trademark TRIVOLIB is also registered in Class 5 vide registration dated August 12, 2011.

• It was submitted by the Plaintiffs that from October 1, 2011 till March 3, 2012, it had sold products worth INR 2,86,00,000 (USD 440,440 approx.). From April 1, 2012 to March 31, 2013, the sale figure jumped up to INR 13,39,00,000 (USD 2,062,060 approx.). Further, the sales increased up to INR 24,39,00,000 (USD 3,756,060 approx.).
• It further submitted that the consumers at large distinguish, identify, and associate TRIVOLIB with the Plaintiff. In addition, it pleaded that the mark is a well-known trademark in India.
• It was alleged that the Defendants have adopted the impugned trademarks having seen the success of the Plaintiff’s medicine without any reason.
• It pointed out that the search by the software of the Plaintiff did throw up TRI-VOBIT 1 and hence the objections were filed. Since the software did not throw up the name of TRI-VOBIT 2, the filing of opposition regarding the same was missed. However, it has applied for cancellation of the said trademark to the Trade Marks Registry.

Defendant’s Contentions

• It submitted that no case for trademark infringement is made out, as it is the registered proprietor of the mark TRI-VOBIT 2 in Class 5.
• With respect to the allegation of passing off, the Defendants submitted that the Plaintiffs have failed to establish the acquired goodwill in the mark TRIVOLIB. Therefore, the case of passing off is not made out.
• It stated that it has launched the mark TRIVOLIB in October 2012. Further, it was contended that the Defendant No. 1 is the registered proprietor of the mark VOBIT, which was bona fidely adopted prior to the Plaintiff. The trade mark VOBIT was used for the first time by the Defendants in 2008 whereas the Plaintiff has been using the trade mark TRIVOLIB since August 2011, only the word TRI has been prefixed to the word VOBIT since October 2012.
• The word TRI in the mark signifies a combination of three drugs, which in the present case were Voglibose, Metformin Hydrochloride and Glimepiride
• It pointed out that the Plaintiff themselves stated that they have no objection to the Defendants using the trademark VOBIT or from the Defendant using the prefix TRI. Hence, it was pleaded that the Plaintiff had no right to seek injunction against the combination of TRI and VOBIT.
• It threw light on the fact that the Plaintiff only opposed the trademark application for the trademark TRI-VOBIT 1. They never filed an opposition to application for registration of mark TRI-VOBIT 2. Hence, they contended that the Plaintiff could not now turn around and say that they have rights in the said trademark.

Court’s Decision

• The Court pointed out that when the suit was filed the trademark of the Defendants TRI-VOBIT 2 was not registered. It was registered about 14 days after filing of the suit. It opined that ‘mere moving of an application, for revoking the registration of the trade mark in favor of the Defendant, by the Plaintiff before the Trade Marks Registry would not confer any rights for the present on the Plaintiff.’
• It held that if the essential ingredients of passing off were made out, a suit for passing off would lie against the Defendants, despite registration of the trademark TRI-VOBIT 2.
• The Court agreed that the Plaintiff was a prior user of the trademark TRIVOLIB. It commenced use of the trademark in October 2011. The sales documents placed by the Plaintiff were also took into consideration by the Court. With respect to the Defendant, the Court pointed out that no other details were given, except the commencement of usage of its trademark TRI-VOBIT only in October 2012 and having sold over 15 lakh strips. Therefore, the Court held that
  the Plaintiff has made out a prima facie case of having built substantial goodwill and reputation in the market. The Plaintiff is a much prior user of the brand TRI VOLIB and has vested rights in the said trademark.
  
• With regards to ‘Deceptive Similarity’ between the marks, the Court reiterated that the test is to see as to whether the essential features of the trademark of the Plaintiff have been adopted by the Defendants. It held that
  ‘the trade mark of the Defendants TRI-VOBIT is prima facie phonetically and structurally similar to the trade mark of the Plaintiff TRIVOLIB. Further, the two drugs of the parties are for the same ailment. The likelihood of confusion cannot be ruled out. There is no merit in the contentions of the Defendant to the contrary.’
• The Court also clarified that while comparing the trademarks, the marks have to be taken as a whole. The plea of the Defendant as being the prior user of the mark is completely misplaced. It held that
  ‘VOBIT has to be compared with TRIVOLIB. When we compare the two words, it is manifest that TRI-VOBIT is structurally and phonetically similar to the trademark of the Plaintiff TRIVOLIB. Merely because the Defendant was using VOBIT earlier cannot be a ground to plead that the words have to be split and then compared as is sought to be done.’

Thus, the Court decreed the suit in favor of the Plaintiff and passed a permanent injunction restraining the Defendants, etc. from dealing in medicinal preparations under the trademark TRI-VOBIT or any other trademark which may be deceptively similar to the Plaintiff’s trade mark TRIVOLIB.

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[1] Please note that the factors are only illustrative. It is not necessary that all the factors are considered while determining similarity of marks. Every case would be measured on its own facts, circumstances and evidences. Where a totality of circumstances indicates trademark infringement it will be enough to get the remedies.

 

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India: Mere registration of film title with a Guild does not guarantee right over the name, says Madras High Court

Source:www.hcmadras.tn.nic.in

Copyright is a set of exclusive rights given to the author of original literary, musical or dramatic works for its use and distribution. Indian film and entertainment industry is one field that gets most of its protection from Copyrights. In the past few years, there has been a sudden boost in the number of international players in the industry, thereby adding on to the IP controversies over using deceptively similar titles or other ways of unauthorized adoption of titles of films, infringement of copyright. However, only the title of the film simply cannot get copyright. The reason behind this is that copyright law recognizes the principle of de
minimis non curat lex (law does concern itself over trifles), according to which any work which is insufficiently significant is not to be offered copyright protection.

The Madras High Court reestablished the same principle in the case of Lyca Productions v J.Manimaran Ors. The Court specifically stated that, ‘mere registration of a film title will not guarantee right over the name, if the production work has not commenced within one-and-a-half years of the registration.’

Facts of the Case

• J. Manimaran (hereinafter referred to as ‘Respondent No.1’) claimed to be the sole proprietor of M/S J.S.Screens that is engaged in the production of Tamil feature films.
• Respondent No.1 stated that it had enrolled as a member of the Film & Television Producers Guild of South India (hereinafter referred to as ‘Respondent No.3’), bearing registration number 9880.
• On September 3, 2011, Respondent No. 1 claimed to have applied for registration of his film titled “KARU” with the Respondent No.3.
• It was further stated that the registration was approved on September 28, 2011 and Respondent No.1 was given Guild Registration No.16530.
• Further, Respondent No. 1 claimed that it is also a member of Tamil Film Producer Council (hereinafter referred to as Respondent No. 2), a society comprising of film producers.
• According to Respondent No. 1, Respondent No. 2 and 3 coordinates and ensures that there is no duplication of registration of film titles. Once a title is registered, none can use it even as prefix or suffix with other words.
• Respondent No. 1 came across hoardings and advertisements in dailies, like ‘Daily Thanthi’, of a film with the same title “KARU”, which is directed by Vijay and produced by Lyca Productions (hereinafter referred to as ‘the Appellant’).
• The Single Judge Bench of Madras High Court passed an order dated February 2, 2018, in favor of Respondent No. 1. Thus, aggrieved by the order, the Appellant filed the present appeal.

Appellants Contentions

• The Appellant contended that the film produced is registered as “LYCAVIN KARU” and Censor certificate has also been obtained under the previously mentioned name. Therefore, the title of both the films are different.
• The Appellant submitted that the content and theme of the film is also different from the one produced by the Respondent No. 1, as the film produced by the Respondent No.1 is a thriller, and the film produced by the Appellant is based on a ghost story.

Respondents Contentions

• Respondent no 1 argued that it had become an established practice in the Cinema industry for producers to become members of organizations and get the titles of films registered and once a title was registered, no other producer could make a film under a title that had been registered or title similar thereto. The titles which were registered could not even be used with a suffix or prefix.

• Respondent No. 1 claimed that being a member of Respondent No. 3, it is entitled to all protection and privileges as available to the members of the Respondent No. 3.
• Respondent No.1 pleaded that at the time when the registration took place there was no other film with the title “KARU” registered with the Respondent No. 3.
• It was submitted by Respondent No. 1 that the production of the film title “KARU” started immediately after its registration with Respondent No. 3. It claimed making huge investments for its previously mentioned film monetarily as also by way of labor, publicity, etc. However, the film is not yet completed.
• It was contended that the Appellant has reportedly registered the film title “KARU” in 2017, 6 years after the registration of the title by Respondent No.1. This adoption of title by the Appellant was alleged to be unfair in view of the earlier registration to Respondent No.1 in 2011.
• It further claimed that the release of the film “KARU” by the Appellant would put it to loss and prejudice, which cannot be compensated in terms of money.

Court’s Decision

• Analyzing Sections 13 and 16 of the Copyright Act, 1957, the Court observed that Copyright Act protects work that is the work, which is relatable to a cinematograph film, that is to say, the visual recording, including sound recording, produced by process analogous to cinematography. The title, which may be a commonly used word, cannot be protected under the law of copyright. Section 13 makes it clear that there is no copyright in a title, it is the entire work which is protected by copyright.
  
• Quoting the judgement of the Hon’ble Supreme Court in the case of Krishika Lulla and others v. Shyam Vithalrao Devkatta and another reaffirmed that a title is not an original literary work. A title does not qualify for being described as work. It is incomplete in itself and refers to the work that follows.
  
• The Court also observed that Respondent No.3 is not a registered Copyright Society under Section 33 of the Copyright Act, 1957, and thus incompetent to administer any right in any work including cinematograph films.
  
• Quoting the judgement of Madras High Court in the case of R.Radhakrishnan v. A.R.Murugadoss and the Film and Television Producers Guild of South India held that American Courts have taken uniform view that title alone of a literary work cannot be protected by Copyright Law. Copying of a title alone, and not the plot, characterization, dialogue, song etc. is not the subject of Copyright Law. Thus, a copyright on a literary work would not include exclusive right to use the title on any other work. What, therefore, follows is that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the copyright of a senior user’s work since there is no copyright infringement merely from the identity or similarity of the titles alone. Same is the position under Copyright Law in India.
  
• The Court pointed the errors of the Single Judge Bench on two grounds. These are:

• The Learned Single Bench erred in holding that the judgment of R. Radha Krishnan v. A.R.Murugadoss, was distinguishable on facts. The Court observed that the Learned Single Bench should have appreciated minor differences like one film being a short film and the other film being a feature film.
• The Learned Single Judge failed to indicate the reasons for its view that the distinguishing features noted in the judgment under appeal render the judgments cited on behalf of the Appellant, holding that there was no copyright in a title, inapplicable.
• The Court further observed that there are no materials on record, which conclusively establish the existence of a practice in the industry for registration of titles or desisting from using titles registered by others. In addition, it was obvious through the facts and circumstances of the case that it was not mandatory for producers to become members of the Respondent No. 2 or 3. Membership of either society was optional and there were many producers who were not members of either of the Respondents.

Therefore, the Court held that sympathy for a weaker party to a litigation could not outweigh the law pronounced by the Court. Furthermore, the learned Single Bench ignored the fact that the Appellant had also made substantial investments for its film, which had been completed and was due to be released on February 23, 2018. The learned Single Bench, in the Court’s view, erred in law in giving undue importance to the size of depiction of LYCAVIN before KARU since the suit was not one for passing off. Thus, the interim order of the Learned Single Bench was set aside and appeal was allowed.